Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA571753
`ESTTA Tracking number:
`11/19/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055264
`Defendant
`Paradise Hospitality Group LLC
`CLIFFORD D HYRA
`SYMBUS LAW GROUP LLC
`11710 PLAZA AMERICA DR STE 2000
`RESTON, VA 20190-4743
`UNITED STATES
`chyra@symbus.com
`Opposition/Response to Motion
`Clifford D. Hyra
`chyra@symbus.com
`/Cliff Hyra/
`11/19/2013
`MotOppSJ20131118PARADISECanc.pdf(171115 bytes )
`YadhlaDec.pdf(291317 bytes )
`HyraDec.pdf(81348 bytes )
`Exhibits1-9.pdf(4727279 bytes )
`Exhibits10-18.pdf(5028144 bytes )
`Exhibits19-25.pdf(5836217 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.:
`
`
`
`
`Reg. No.:
`
`
`
`
`
`
`92/055,487
`92/055,264 (parent)
`
`3,900,817
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`
`
`
`
`
`
`)
`
`PARADISE BIRYANI, INC.
`)
`
`
`
`
`
`
`)
`
`
`
`Petitioner,
`
`)
`
`
`
`
`
`
`)
`
`
`v.
`
`
`
`)
`
`
`
`
`
`
`PARADISE HOSPITALITY GROUP LLC )
`
`
`
`
`
`
`)
`
`
`
`
`
`
`)
`
`
`Registrant
`
`
`)
`
`
`
`
`
`
`)
`
`
`REGISTRANT'S MEMORANDUM IN OPPOSITION TO PETITIONER’S SUMMARY
`JUDGMENT MOTION
`
`
`
`Registrant, Paradise Hospitality Group LLC ("Registrant") hereby submits
`
`this
`
`
`
`
`memorandum of law in opposition to Petitioner Paradise Biryani, Inc.’s (“Petitioner”) motion for
`
`summary judgment, filed October 21, 2013.
`
`
`
`Statement of Disputed Material Facts
`
`At least the following material facts are in dispute:
`
`1.
`
`Whether Mr. Raj Narsing Gowlikar is in fact President of Petitioner (Paragraph 1 of
`
`Petitioner’s “undisputed material facts” and of Declaration of Narsing Raj Gowlikar). Petitioner
`
`is listed as Paradise Biryani, Inc., incorporated under the laws of New Jersey. However, no such
`
`entity is listed in the New Jersey Division of Revenue and Enterprise Services. See attached
`
`Exhibits 1 and 2. The records for the entities connected with Narsing Raj Golwikar were
`
`
`
`1
`
`

`

`
`
`retrieved, and reflect no record of any Paradise Biryani, Inc., see attached Exhibit 20.
`
`2.
`
`When Paradise Biryani, Inc. was founded and how long it has been in the business of
`
`providing Indian cuisine, if indeed it exists at all (Paragraph 2 of Declaration of Narsing Raj
`
`Gowlikar, Paragraphs 2 and 7 of Petitioner’s “undisputed material facts”). No such entity is
`
`listed in the New Jersey Division of Revenue and Enterprise Services. See attached Exhibits 1
`
`and 2. A trademark infringement complaint filed in September, 2011 listing Narsing Raj
`
`Gowlikar as a plaintiff makes no mention of a Paradise Biryani, Inc., and states that the Plaintiffs
`
`(Paradise Biryani Express, Inc., Narsing Raj Gowlikar, Paradise Indian Cuisine, LLC, and
`
`Biryani Pointe Paradise, LLC) have “the exclusive right to use the “Paradise Biryani Pointe,”
`
`“Paradise,” and “Paradise Indian Cuisine” marks throughout New Jersey and the United States.”
`
`(Exhibit 24, pages 1 and 3)
`
`3.
`
`Whether there was a valid assignment from Narsing Raj Gowlikar to Paradise Biryani
`
`Inc. of U.S. Trademark Registration No. 4,047,868 for PARADISE BIRYANI POINTE and
`
`whether Petitioner is the holder of that registration (Paragraph 3 of Declaration of Narsing Raj
`
`Gowlikar, Paragraph 2 of Petitioner’s “undisputed material facts”). Trademark Office records
`
`reflect an assignment of this registration from Narsing Raj Gowlikar to Paradise Biryani Inc. in
`
`November, 2011, see attached Exhibit 3. Whether this assignment is valid depends in part on
`
`whether Paradise Biryani Inc. existed at the time of the transfer and what happened to it
`
`subsequently. Currently, there appears to be no record of such an entity ever having existed.
`
`4.
`
`Whether U.S. Trademark Registration No. 4,047,868 for PARADISE BIRYANI POINTE
`
`is a valid and subsisting trademark registration (Paragraph 2 of Petitioner’s “undisputed material
`
`facts”) or is, in fact, void ab initio. Petitioner’s own Exhibit A shows this registration was
`
`originally owned by Narsing Raj Gowlikar. As TMEP § 1201.02(b) notes, an application for
`2
`
`
`

`

`
`
`trademark registration is void if the wrong party is identified as the applicant. The TMEP
`
`furthermore states that this defect cannot be cured by an assignment. Petitioner alleges that
`
`Narsing Raj Gowlikar is President of Paradise Biryani, Inc. (Paragraph 1, Declaration of Narsing
`
`Raj Gowlikar). Specifically, TMEP 1201.02(c) states that “If the president of a corporation is
`
`identified as the owner of the mark when in fact the corporation owns the mark… the application
`
`is void as filed because the applicant is not the owner of the mark.” Petitioner argues that
`
`“Paradise Biryani, Inc. has been in the business of providing high quality Indian cuisine since
`
`September 2007” (Paragraph 3 of Declaration of Narsing Raj Gowlikar) and the application was
`
`filed in September of 2010. Thus Petitioner’s own evidence would show that Registration No.
`
`4,047,868 was void ab initio and is therefore not valid or subsisting, or at least, a substantial
`
`question of fact is raised.
`
`5.
`
`Whether Petitioner is the holder of U.S. Trademark Registration No. 4,208,745 for
`
`PARADISE BIRYANI POINTE & Des. (Paragraph 4 of Declaration of Narsing Raj Gowlikar,
`
`Paragraph 3 of Petitioner’s “undisputed material facts”). Petitioner’s own Exhibit B shows the
`
`owner of this mark to be Biryani Pointe Paradise LLC. No relationship is disclosed between
`
`Biryani Pointe Paradise LLC and the Petitioner.
`
`6.
`
`What the date of first use is for U.S. Trademark Registration No. 4,208,745 for
`
`PARADISE BIRYANI POINTE & Des. Registrant is aware that Petitioner made changes to its
`
`logo in 2010 in reaction to a trademark infringement claim by a third party (Paragraph 3,
`
`Declaration of Sudakhar Yadhla).
`
`7.
`
`Whether Petitioner is the holder of U.S. Trademark Application Serial No. 85/124,045 for
`
`PARADISE INDIAN CUISINE (Paragraph 5 of Declaration of Narsing Raj Gowlikar, Paragraph
`
`4 of Petitioner’s “undisputed material facts”). While Petitioner’s Exhibit C shows the application
`3
`
`
`

`

`
`
`to be in Petitioner’s name, there appears to be no record of Petitioner ever having existed, see
`
`attached Exhibits 1 and 2.
`
`8.
`
`Whether U.S. Trademark Application Serial No. 85/124,045 for PARADISE INDIAN
`
`CUISINE is a valid and subsisting trademark application (Paragraph 4 of Petitioner’s
`
`“undisputed material facts”). Petitioner’s own Exhibit C shows that this application was
`
`originally owned by Narsing Raj Gowlikar. As TMEP § 1201.02(b) notes, an application for
`
`trademark registration is void if the wrong party is identified as the applicant. Furthermore, this
`
`defect cannot be cured by an assignment. TMEP 1201.02(c) states that “If the president of a
`
`corporation is identified as the owner of the mark when in fact the corporation owns the mark…
`
`the application is void as filed because the applicant is not the owner of the mark.” Petitioner
`
`argues that “Paradise Biryani, Inc. has been in the business of providing high quality Indian
`
`cuisine since September 2007” (Paragraph 3 of Declaration of Narsing Raj Gowlikar) and the
`
`application was filed in September of 2010. Thus Petitioner’s own evidence would show that
`
`Serial No. 85/124,045 was void when filed and is therefore not valid or subsisting.
`
`9.
`
`Whether Petitioner has standing to continue this proceeding, in light of disputed facts 1-9
`
`and the fact that it apparently does not exist, is not the holder of any of the trademark
`
`registrations and application relied on, and has never used the marks at issue.
`
`10. When the first PARADISE BIRYANI POINTE restaurant opened (Paragraph 6 of
`
`Declaration of Narsing Raj Gowlikar, Paragraph 7, 9 and 11 of Petitioner’s “undisputed material
`
`facts”). Evidence of the opening should be easy for the Petitioner produce, however no such
`
`evidence was produced. The Petitioner merely makes this unsupported claim in a declaration.
`
`TBMP 528.05(b) notes that “An affidavit that is not supported by documentary evidence may
`
`nevertheless be given consideration if the statements contained in the affidavit are clear and
`4
`
`
`

`

`
`
`convincing in character, and uncontradicted.” Applicant’s Exhibit D and Yelp show one Paradise
`
`Biryani Pointe restaurant in North Brunswick, New Jersey. The first review is in March, 2009,
`
`see attached Exhibit 5. Therefore, the statement as to first use is not uncontradicted. Furthermore,
`
`given the numerous inaccuracies throughout the Declaration of Raj Gowlikar, it cannot be
`
`considered clear and convincing in character.
`
`11. Whether Petitioner has any franchises, and if so how many (Paragraph 11 of Petitioner’s
`
`“undisputed material facts,” Paragraph 6 of Declaration of Narsing Raj Gowlikar). Petitioner’s
`
`Exhibit D shows franchises in many states with franchise reporting requirements, including
`
`California, Illinois, Maryland, Minnesota, New York, and Virginia, see attached Exhibit 6.
`
`California and Minnesota make franchise registration information available online. Exhibit 7
`
`shows a search of California’s franchise database for all franchises containing the word
`
`PARADISE. Petitioner does not appear in the search results. Exhibits 8 and 9 show searches of
`
`Minnesota’s franchise database for all franchise registrations and renewals containing the word
`
`PARADISE. There are no results. Registrant contacted Virginia’s State Corporation Commission
`
`Division of Securities and Retail Franchising and was told that Petitioner is not registered in
`
`Virginia (Declaration of Clifford D. Hyra, paragraph 5). Petitioner has provided no information
`
`as to whether it is a valid franchisor or has any lawful franchises.
`
`The only evidence provided to support its claim of 33 franchises is the Declaration of Raj
`
`Gowlikar and a printout of Petitioner’s website (Exhibit D). However, Exhibit D does not
`
`contain a date, which is required for Internet materials to be self-authenticating under TBMP §
`
`528.05(e), and has not been authenticated pursuant to Fed. R. Civ. P. 56(e), at least because the
`
`date of the materials has not been identified. In any case, printed publications are only admissible
`
`for what they show on their face, which is that Petitioner has claimed on its website to have
`5
`
`
`

`

`
`
`locations in these states, and not for the underlying facts asserted therein, i.e., that such
`
`restaurants actually exist and/or that the franchises are franchisees of Petitioner.
`
`12. Whether Petitioner has any legally cognizable relationship with any of the restaurants
`
`indicated in Petitioner’s Exhibit D or any other restaurants. Petitioner has presented no license
`
`agreements or other evidence of any legal relationship. Petitioner claims the locations are
`
`franchises, but Registrant is unable to confirm that Petitioner is registered as a franchisor in any
`
`state, see attached Exhibits 7-9, Declaration of Clifford D. Hyra paragraph 5. The complainant in
`
`the trademark infringement case pertaining to PARADISE BIRYANI POINTE attached as
`
`Exhibit 24 admits that for at least one of its alleged franchisees “there was no written franchise
`
`or licensing agreement in place.” (page 4, Exhibit 24)
`
`13.
`
`If and when the first PARADISE INDIAN CUISINE restaurant opened (Paragraph 7 of
`
`Declaration of Narsing Raj Gowlikar, Paragraphs 8 and 12 of Petitioner’s “undisputed material
`
`facts”). Petitioner asserts the restaurant opened in September, 2009 and that first use in
`
`commerce began as early as August 12, 2009, but provides no evidence of this other than a
`
`printout from the Yelp website (Petitioner’s Exhibit E). This is a website where business owners
`
`and customers add information with little in the way of authentication, and Exhibit E shows only
`
`two customer reviews, an unusually low number for a restaurant open for four years. Attached
`
`Exhibit 10 shows a Yelp entry for the exact same location titled PERSIS INDIAN GRILL with
`
`many more reviews, starting in June 2010. The complainant in the trademark infringement case
`
`pertaining to PARADISE BIRYANI POINTE attached as Exhibit 24 asserts a first use date of
`
`2007 for “Paradise Indian Cuisine” (page 3, Exhibit 24). Exhibit 11 shows a printout from the
`
`New Jersey Division of Revenue and Enterprise Services website showing several entities
`
`containing PARADISE INDIAN in their names. The first, Paradise Indian Cuisine of NJ, L.L.C.,
`6
`
`
`

`

`
`
`was registered in December of 2009. At some point Nursing Raj Gowlikar’s name becomes
`
`associated with this company, see attached Exhibit 12, suggesting a connection between this
`
`company and the restaurant referenced by Petitioner.
`
`14. Who owned the first PARADISE INDIAN CUISINE restaurant and when. Petitioner
`
`makes no claim of owning this restaurant and provides no evidence of ownership at any time. If
`
`the restaurant ever existed, it appears to now be called PERSIS INDIAN GRILL, see Petitioner’s
`
`Exhibit E, attached Exhibit 10. Therefore it seems unlikely to be a franchise of the Petitioner.
`
`New Jersey state records, attached as Exhibit 12, show that Paradise Indian Cuisine of NJ, LLC
`
`was formed in December of 2009 for restaurant and catering purposes, and its sole member at
`
`that time was one Rajbir Singh, not Paradise Biryani, Inc. or Narsing Raj Golwikar.
`
`15.
`
`How long the Petitioner’s alleged PARADISE INDIAN CUISINE restaurant was open, if
`
`at all (Paragraph 12 of Petitioner’s “undisputed material facts”). Petitioner’s Exhibit E shows two
`
`reviews, one in September 2009 and a second in 2013 which states in part “This location is stated
`
`as Paradise on Yelp, but is really a restaurant called Persis…” Based on this and Exhibit 10, it
`
`appears the PARADISE INDIAN CUISINE restaurant was closed by June, 2010, if indeed it was
`
`ever open for business. Even the complainant in the trademark infringement case pertaining to
`
`PARADISE BIRYANI POINTE attached as Exhibit 24 states that “Prior to July 2011, there was
`
`also a Paradise Indian Cuisine located at 3800 Quakerbridge Road, Hamilton, New Jersey.”
`
`(emphasis added) (Page 2, Exhibit 24)
`
`16.
`
`Given the disputed facts above, whether Petitioner ever used the mark PARADISE
`
`INDIAN CUISINE and if so, whether it abandoned the mark due to non-use.
`
`17. When the PARADISE BIRYANI POINTE restaurant in Herndon, VA opened (Paragraph
`
`13 of Petitioner’s “undisputed material facts,” Paragraph 8 of Declaration of Narsing Raj
`7
`
`
`

`

`
`
`Gowlikar). Narsing Raj Gowlikar indicates an opening date of July 2010, with no supporting
`
`evidence, however the attached Declaration of Sudakar Yadhla states at paragraph 4 that the
`
`restaurant was not open then. Furthermore, Yelp received its first review for this location in
`
`September, 2010, see attached Exhibit 13. The restaurant’s own Facebook page shows the grand
`
`opening as taking place September 18, 2010, see attached Exhibit 14.
`
`18. Whether the PARADISE BIRYANI POINTE restaurant in Herndon, VA has any legally
`
`cognizable relationship with the Petitioner (Paragraphs 8, 20, and 21 of Declaration of Narsing
`
`Raj Gowlikar). Petitioner has not explicitly alleged any such connection and has provided no
`
`evidence of any relationship between the Herndon restaurant and the Petitioner, although it is in
`
`possession of all such evidence, if indeed any exists. TBMP 528.05(b) notes that “An affidavit
`
`that is not supported by documentary evidence may nevertheless be given consideration if the
`
`statements contained in the affidavit are clear and convincing in character, and uncontradicted.”
`
`However, the PARADISE BIRYANI POINTE restaurant in Herndon, VA appears to use a
`
`different mark than U.S. Trademark Registration No. 4,208,745 for PARADISE BIRYANI
`
`POINTE & Des., see attached Exhibit 4. Registrant contacted Virginia’s State Corporation
`
`Commission Division of Securities and Retail Franchising and was told that neither the
`
`Petitioner, nor any entity with PARADISE in its name, is registered as a franchisor in Virginia
`
`(Declaration of Clifford D. Hyra, paragraph 5). Given the lack of franchise registration as shown
`
`in Exhibits 7-9, the failure of the Petitioner to provide any evidence whatsoever of any
`
`relationship between the Petitioner and any of the alleged franchises, and the admission in
`
`Exhibit 24 of a “frachisee” operating without any written agreement, this statement cannot be
`
`taken as clear and convincing and uncontradicted. It does not meet Petitioner’s burden on
`
`summary judgment to produce a prima facie case.
`8
`
`
`

`

`
`
`19. Whether PARADISE BIRYANI POINTE and PARADISE INDIAN CUISINE locations
`
`have been marketed as “Paradise” and, if so, whether the PARADISE BIRYANI POINTE and
`
`PARADISE INDIAN CUISINE marks are still in use by the Petitioner, if indeed they ever were
`
`in use (Paragraph 15 of Petitioner’s “undisputed material facts,” Paragraph 10 of Declaration of
`
`Narsing Raj Gowlikar). Petitioner provides no evidence in support of this assertion. The
`
`evidence produced by the Petitioner, including Petitioner’s Exhibits D – I, appears to show
`
`restaurants marketed as PARADISE BIRYANI POINTE or PARADISE INDIAN CUISINE.
`
`20. What exactly Petitioner has done to market its locations as “Paradise” and whether this
`
`marketing created the “consumer confusion” noted by Petitioner between Registrant’s Herndon,
`
`VA restaurant and the Herndon, VA PARADISE BIRYANI POINTE restaurant, rather than any
`
`similarity between the actual marks at issue.
`
`21. Whether all PARADISE BIRYANI POINTE and PARADISE INDIAN CUISINE
`
`locations feature “Paradise” prominently displayed on a sign above the rest of the restaurant
`
`name (Paragraph 17 of Petitioner’s “undisputed material facts,” Paragraph 12 of Declaration of
`
`Narsing Raj Gowlikar). Exhibit 4 shows an article including a photograph of the PARADISE
`
`BIRYANI POINTE Herndon location. The word PARADISE is in tiny letters to the left of
`
`BIRYANI POINTE on the sign. (See also Paragraph 5, Declaration of Sudakar Yadhla)
`
`22. Whether PARADISE BIRYANI POINTE is a successful or well-regarded brand
`
`(Paragraph 18 of Petitioner’s “undisputed material facts,” Paragraph 13 of Declaration of
`
`Narsing Raj Gowlikar). As discussed above, there is no evidence of Petitioner owning any
`
`restaurants or franchises. Furthermore, mere number of locations does not indicate success or
`
`high regard. Exhibits 15-16 show Yelp ratings for PARADISE BIRYANI POINTE locations in
`
`the D.C. and New Jersey metropolitan areas, respectively. Ratings generally hover around three
`9
`
`
`

`

`
`
`stars, or mediocre. In the same Exhibit, Registrant can be seen to have a four-star, or very good,
`
`rating. Exhibit 4 for the Herndon PARADISE BIRYANI POINTE restaurant contains many
`
`negative reviews, including the statements: “Pathetic stale food. Both my husband and I had
`
`severe food ache after eating the food,” “Waste of spending money for tasteless food with rude
`
`behavior by Biryani Pointe persons,” “Mediocre at best,” “The chicken smelled really bad as if it
`
`had been sitting out in open for days,” etc.
`
`23. Whether PARADISE BIRYANI POINTE is the largest chain of Indian restaurants in the
`
`United States (Paragraph 15 of Declaration of Narsing Raj Gowlikar). No evidence is provided
`
`in support of this statement. Furthermore, there is no evidence that the locations listed on
`
`Petitioner’s website are part of a chain or otherwise legally related in any way.
`
`24. Whether Petitioner has expended effort and expense in promoting its marks, whether the
`
`public has come to know, rely on, or recognize Petitioner’s services by such marks, and whether
`
`Petitioner has valuable goodwill established in its marks (Paragraph 10 of Petitioner’s
`
`“undisputed material facts”). There is no evidence to support this argument of counsel. The
`
`Declaration of Raj Gowlikar does not address these questions. Exhibits 4 and 15-16 tend to show
`
`there is no valuable goodwill in Petitioner’s marks.
`
`25. What Registrant’s priority date is (Paragraph 6 of Petitioner’s “undisputed material
`
`facts,” Paragraph 16 of Declaration of Narsing Raj Gowlikar). Registrant has claimed use
`
`analogous to trademark use extending back to September, 2009, see Paragraph 2, Declaration of
`
`Sudakar Yadhla. The relevant interrogatory and answer thereto are attached as Exhibit 21. This
`
`date is prior to the date PARADISE INDIAN CUISINE is alleged to first be used in commerce
`
`by Petitioner.
`
`26.
`
`
`How extensive the use of the term “PARADISE” is among third-party restaurants.
`10
`
`

`

`
`
`Registrant’s trademark search revealed a number of third parties apparently using PARADISE in
`
`the names of their restaurants and particularly Indian restaurants, see request for production and
`
`the document produced in response thereto, attached as Exhibit 22, also see Registrant’s updated
`
`search of the USPTO database for marks containing PARADISE in connection with food or
`
`restaurants, attached as Exhibit 23, as well as updated Google search results attached as Exhibit
`
`25 (and paragraphs 2, 16 and 17 of Declaration of Clifford D. Hyra). There appear to be
`
`hundreds of third-party restaurants, including Indian restaurants, using the term PARADISE in
`
`their names.
`
`27. Whether the term “PARADISE” is a highly distinctive term (Paragraph 19 of Declaration
`
`of Narsing Raj Gowlikar) given its dilution by third-party use and registrations (see Exhibits 22-
`
`23 and 25) and the admission of descriptiveness by Petitioner, through counsel (“your clients[sic]
`
`rights to the word PARADISE are non-existent due to the descriptive nature of [Paradise]”), see
`
`attached Exhibit 17.
`
`28. Whether there have been any incidents of actual customer confusion between the
`
`Petitioner and Registrant (Paragraphs 16-18 of Petitioner’s “undisputed material facts,”
`
`Paragraphs 20-21 of Declaration of Narsing Raj Gowlikar). All incidents appear to be between
`
`the Herndon PARADISE BIRYANI POINTE and Registrant’s Herndon restaurant. If the
`
`Herndon PARADISE BIRYANI POINTE has no legal relationship with Petitioner, a disputed
`
`fact addressed above in paragraph 18 then no incidents of confusion between Petitioner and
`
`Registrant have occurred.
`
`29. Whether Petitioner’s delay in asserting trademark rights against Registrant has any
`
`excuse and whether that delay caused undue prejudice to Registrant. Petitioner alleges a
`
`relationship with the PARADISE BIRYANI POINTE restaurant in Herndon, VA and therefore
`11
`
`
`

`

`
`
`must have been aware of Registrant’s rights at least as early as August of 2010. Registrant’s
`
`mark was raised by the trademark examining attorney in December of 2010 during examination
`
`of Raj Gowlikar’s application to register PARADISE INDIAN CUISINE, see attached Exhibit
`
`19. Therefore Raj Gowlikar, alleged to be President of the Petitioner, must have been aware of
`
`Registrant’s applications for registration at least as early as that date. Nevertheless, Petitioner
`
`took no action to oppose Registrant’s applications or otherwise contest Registrant’s marks for
`
`well over a year. During that time, Registrant went to great expense to build its brand and
`
`increase the goodwill in its marks in reliance on Petitioner’s lack of objection (Paragraph 7,
`
`Declaration of Sudakar Yadhla).
`
`30. Whether Petitioner, through misleading conduct, led Registrant to reasonably infer that
`
`the Petitioner did not intend to enforce its alleged rights against the Registrant, whether the
`
`Registrant relied on this misleading conduct and whether the reliance resulted in undue prejudice
`
`to Registrant. Petitioner’s apparent counsel indicated in a letter dated September 9, 2010 that
`
`“your client is in violation of my client’s trademark… we expect that you are prepared to
`
`compensate us for the use and goodwill that have been misappropriated by PARADISE INDIAN
`
`CUISINE in Herndon, VA,” see attached Exhibit 18. Petitioner took no action to oppose
`
`Registrant’s applications or otherwise contest Registrant’s marks for well over a year. During
`
`that time, Registrant went to great expense to build its brand and increase the goodwill in its
`
`marks in reliance on Petitioner’s lack of objection (Paragraph 7, Declaration of Sudakar Yadhla).
`
`31. Whether Registrant has priority of use in the D.C. metropolitan area. Petitioner’s own
`
`“undisputed facts” claim that the PARADISE BIRYANI POINTE restaurant in Herndon, VA
`
`opened in August, 2010 and that Registrant’s restaurant in Herndon, VA opened earlier that same
`
`year, i.e., in February, 2010. Petitioner does not claim any other restaurant in the D.C. metro area
`12
`
`
`

`

`
`
`at the time Registrant’s restaurant opened. Indeed, no such restaurants existed (Paragraph 8,
`
`Declaration of Sudakar Yadhla). Furthermore, as shown in Petitioner’s own Exhibits A-C,
`
`Petitioner had not applied for federal registration of its marks at that time.
`
`32. Whether Petitioner’s complaints about confusion between the Herndon, VA PARADISE
`
`BIRYANI POINTE restaurant and Registrant’s restaurant are legally cognizable in light of the
`
`question of priority in the D.C. area and Petitioner’s apparent efforts to increase confusion, such
`
`as removing disclaimers (Paragraph 9, Declaration of Sudakar Yadhla) and instructions to
`
`answer the phones “Paradise Herndon” (Paragraph 11, Declaration of Raj Gowlikar).
`
`33. Whether Petitioner’s petition can be sustained in light of the three D.C. metro-area
`
`locations it claims to have opened (Petitioner’s Exhibit D), all of which opened after Registrant’s
`
`restaurant (Paragraph 10, Declaration of Sudakar Yadhla).
`
`
`
`ARGUMENT
`
`On a motion for summary judgment, it is the movant's burden to demonstrate the absence
`
`of a genuine issue of material fact as to any of the necessary elements of movant's claim.
`
`Cincinnati Ins. Co. v. Flanders Elec. Motor Serv., Inc., 40 F.3d 146, 150 (7th Cir. 1995).
`
`Summary judgment is improper where the evidence is such that a reasonable finder of fact could
`
`return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
`
`(1986). Further, “the nonmoving party must be given the benefit of all reasonable doubt as to
`
`whether genuine issues of material fact exist; and the evidentiary record on summary judgment,
`
`and all inferences to be drawn from the undisputed facts, must be viewed in the light most
`
`favorable to the non-moving party" Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766 (Fed.
`
`Cir. 1993).
`
`
`13
`
`

`

`
`
`In this case, Petitioner bears the burden of showing that there are no issues of fact
`
`precluding summary judgment on its claims of priority of use and likelihood of confusion. It also
`
`bears the burden of demonstrating that there is no factual basis for Registrant’s affirmative
`
`defenses (that is, that based on the record evidence, Registrant cannot prove that Petitioner has
`
`abandoned its marks or that Petitioner’s claim is barred by unclean hands, laches, estoppel,
`
`waiver, or acquiescence). See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (movant
`
`entitled to judgment as a matter of law because "nonmoving party has failed to make a sufficient
`
`showing on an essential element of [its] case with respect to which [it]has the burden of proof.").
`
`Petitioner has not met this burden. Contrary to Petitioner’s assertion that its priority of
`
`use is "clear and undisputed," there are disputed issues of fact with respect to each element of
`
`Petitioner’s claims of priority and continuity of use and likelihood of confusion, and with respect
`
`to Registrant’s affirmative defenses. The Petitioner relies on an almost entirely unsupported
`
`declaration as the source of its “undisputed facts” despite the fact that, if these “undisputed facts”
`
`are indeed true, Petitioner should be in possession of copious documentary evidence to support
`
`them. Unsupported statements in declarations can be considered, but only if they are clear and
`
`convincing and not contradicted. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60
`
`USPQ2d 1733, 1736 (TTAB 2001); 4U Company of America, Inc. v. Naas Foods, Inc., 175
`
`USPQ 251, 253 (TTAB 1972). Here, Registrant has presented its own evidence that contradicts
`
`nearly all of the statements in the Petitioner’s declaration. It is further submitted that these
`
`inaccuracies in the declaration submitted by Petitioner prevent it from having a clear and
`
`convincing character. Registrant requires trial testimony to test the accuracy of those of
`
`Petitioner’s statements for which relevant evidence is in the possession of the Petitioner.
`
`As a result of the contradictory evidence introduced by the parties, the answers to
`14
`
`
`
`

`

`
`
`numerous critical questions of fact are in dispute. Foundational questions of fact remain
`
`unresolved, such as, on the most basic level: Does Petitioner have standing? Does the Petitioner
`
`exist? Does the Petitioner run any restaurants? Does the Petitioner have any franchisees? Does
`
`the Petitioner have any valid license agreements? Do any of the restaurant locations on
`
`Petitioner’s website reflect use in commerce by the Petitioner? Does the Petitioner own any of
`
`the marks relied upon in this proceeding? Are Petitioner’s purported registrations void and
`
`unenforceable for being filed in the name of the wrong party? Were the assignments of
`
`Petitioner’s marks valid? What is Petitioner’s first use date for each mark? Which party has
`
`priority for each mark? In which geographical areas? Is any consumer confusion due to similarity
`
`of the marks at issue, or due to Petitioner’s use of other (more similar) marks and deliberately
`
`confusing actions?
`
`Deciding a case on summary judgment with such numerous and critical questions of fact
`
`unresolved would be inappropriate. Trial testimony is absolutely essential to unravel these
`
`sometimes complex factual questions. Summary judgment is only appropriate where the
`
`evidence shows “that there is no genuine issue as to any material fact.” Fed. R. Civ. P. 56(c).
`
`Here, there are numerous genuine issues as to material facts and therefore the motion for
`
`summary judgment should be denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`15
`
`

`

`
`
`
`
`CONCLUSION
`
`Because there are numerous genuine issues of material fact to be resolved at trial,
`
`Registrant requests that Petitioner’s motion for summary judgment be denied.
`
`
`
`
`Date: November 19, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`PARADISE HOSPITALITY GROUP LLC
`
`
`
`
`
`
`By:___/s/ Clifford D. Hyra____
`Clifford D. Hyra, Esq.
`Symbus Law Group, LLC
`Attorneys for Registrant
`11710 Plaza America Drive, Suite 2000
`Reston, VA 20190
`Ph.: (866) 913-3499
`Fax: (866) 912-3501
`chyra@symbus.com
`
`
`
`
`
`
`16
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and complete copy of the foregoing
`
`REGISTRANT'S MEMORANDUM IN OPPOSITION TO PETITIONER’S SUMMARY
`
`JUDGMENT MOTION, together with declarations and all exhibits, has been served by email,
`
`per agreement of the parties, upon the following counsel of record this nineteenth day of
`
`November, 2013.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mark J. Ingber, Esq.
`ingber.law@verizon.net
`
`_/s/ Cliff Hyra_______________________
`Clifford D. Hyra
`
`17
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PARADISE BIRYANI, INC.
`
`Petitioner,
`
`v.
`
`PARADISE HOSPITALITY GROUP LLC
`
`Registrant
`
`VVVVVVVVVVVV
`
`Opposition No.:
`
`92/055,487
`92/055,264 (parent)
`
`R‘eg. No.:
`
`3,900,817
`
`DECLARATION OF SUDAKAR YADHLA
`
`I, Sudakar Yadhla, declare as follows:
`
`1.
`
`I am managing partner of Paradise Hospitality Group LLC. I manage the day-to-day
`
`operations of the restaurant owned by Paradise Hospitality Group LLC, PARADISE INDIAN
`
`CUISINE, located at 324 Elden St, Hemdon, VA 20170. The facts set forth in this declaration
`
`are based upon my personal knowledge.
`
`2.
`
`Although Paradise Hospitality Group LLC’s PARADISE INDIAN CUISINE restaurant
`
`did not open its doors until February, 2010, Paradise Hospitality Group LLC began using the
`
`PARADISE INDIAN CUISINE mark in September, 2009, both in establishing business
`
`relationships and making business arrangements in preparations for opening, and in advertising
`
`the soon-to-open restaurant to the relevant market, particularly Indian communities in the DC.
`
`metropolitan